Protection of Traditional Terms & Expressions-Changes to the Trade Marks Act
1/10/2009

Background
The IP Laws Amendment Bill is currently the subject of a process of consultation in cabinet between relevant ministries. According to the Director of Commercial Law and Policy at the DTI, Mr. MacDonald Netshitenzhe, the Bill should be placed before a parliamentary portfolio committee by early October with a view to being passed by early December.

The proposed legislation could have wide ranging implications for the law governing a broad range of intellectual property rights (IPRs) in South Africa, including performer’s rights, copyright, designs and Trade Marks. However, this article highlights aspects of the Bill that are most pertinent to the law of Trade Marks.

The Bill seeks to amend the Trade Marks Act to provide protection for names and features associated with traditional knowledge and to assist the communities that are the custodians of such knowledge to commercialize it.

Like the Patents Amendment Act of 2005, the proposed legislation follows the adoption of the Indigenous Knowledge Systems (IKS) Policy by cabinet in 2004 as well as years of participation by various ministries in discussions at inter-governmental organizations such as the United Nations Environmental Programme (UNEP), World Trade Organization (WTO), World Intellectual Property Organization (WIPO) and Food and Agricultural Organization (FAO).

The most salient features of the Bill are noted below.
The Bill introduces a reference to a “Traditional Term or Expression”
This refers to a term or expression recognized by an indigenous community as having an indigenous origin and traditional character and that is used to designate, describe or refer to goods and services. This definition mirrors the term “traditional and cultural expression” (TCE), which has been subject of negotiation under the auspices of the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) since October 2000.
Indigenous Communities are defined
The Bill defines an indigenous community as any community of people currently or historically living within the borders of South Africa. This definition is important as the proposed legislation may give indigenous communities or their authorized agents the sole right to apply for Trade Marks that consist exclusively of traditional terms or expressions.
The creation of a Council
At the core of the Bill is the introduction of a National Council for Traditional Intellectual Property, which would sit as the Council for traditional terms and expressions for the purposes of the Trade Marks Act. The Council will consist of 12 Members who may serve for a period of 3 years, renewable. All Trade Mark applications that appear to consist exclusively of traditional terms or expressions will be referred to the Council for consideration. The Council will advise the Registrar whether to accept or refuse applications referred to it.
The establishment of a Database
The Bill proposes the establishment of a national database for Traditional Intellectual Property (TIP), which will function as the database for traditional terms and expressions for the purposes of the Trade Marks Act. The database will be a publicly available resource including traditional terms and expressions contained in Trade Mark applications referred to the Council or submitted to the Council for consideration by indigenous communities.
The Trust Fund
The national trust fund for TIP will function as a fund for dealing with income related to traditional terms and expressions. It will receive and administer all monies payable in respect of the use of traditional terms and expressions, for the benefit of the indigenous communities. It is likely that the fund will play an important role as intermediary between enterprises seeking to utilize TIP and relevant indigenous communities, determining beneficiaries where the latter cannot easily be identified.
Protection of Geographical Indications (GIs)
The Bill defines a GI as an indication that identifies goods as originating in the territory of the Republic or in a region or locality in that territory, where a particular quality, reputation or other characteristic of the goods is essentially attributable to the geographical origin of the goods, including natural and human factors. While the Trade Marks Act in its current form generally treats marks that serve exclusively as GIs as unregistrable, with the possible exception of certification marks, the Bill expressly provides that they may be registered as certification or collective marks. This mirrors the protection envisaged at the international level by the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement).
Compulsory License Provisions
Persons who have used traditional terms or expressions from a date prior to a registration may continue to use the mark, subject to compulsory license fees that will be determined by negotiation between the persons using the mark, the trust fund, collecting societies representing those parties or, in the absence of agreement, arbitration or court proceedings.
Conclusion
When the Bill is passed, current and prospective Trade Mark holders will need to be mindful of indigenous communities and any rights that they may have in terms or expressions. All users of marks in the domestic IP regime will have to take these rights into account.

The Bill’s entry into force will make South Africa a pioneer in using this approach to protect TIP. Most jurisdictions participating in the IGC negotiations favour the protection of traditional knowledge systems through means outside the IP system. While jurisdictions such as Venezuela and India have taken similar steps to South Africa, the changes proposed by the Bill that lies before our cabinet will have more profound effects than those seen in other territories.

South Africa faces the task of finding solutions to the difficulties that may arise in implementing such a system. One potential issue is how a Trade Mark examiner is to initially determine that a mark that is the subject of an application consists if a traditional term or expression so as to warrant referral to the Council. Once the database has accumulated a sizable content, this may become easier but in the interim, difficulties may arise and it will be important to find ways to mitigate resulting delays. Another question is how the Trust Fund is to apply monies so as to benefit the true originators of traditional terms or expressions, particularly when disputes between and within indigenous communities arise. The resolution of the latter issue will be central to the Bill fulfilling its purpose.

Samantha Copeling
Partner
sc@adamsadams.co.za

Marumo Nkomo
Candidate Attorney
marumo-n@adamsadams.co.za